Tuesday, 30 June 2015

T 1775/12 - Second Oral Proceedings

If an application is granted on a request filed during oral proceedings, does that applicant have a right to second oral proceedings if that request is refused?

To set the context, I'll summarize the prosecution history. In 2008 this application was filed as one of four divisionals. During prosecution two official communications were sent under art. 94(3), after each of which an amended claim set was filed. In response to a summons for oral proceedings a further amended claim set was filed. During the oral proceedings, an auxiliary request was filed, followed by an amended auxiliary request. The latter was then granted. After receiving the intention to grant communication (R.71(3)), the applicant files a new request. The new claim set has been broadened with respect to the granted claim set by deleting a feature. In the ensuing correspondence, the applicant request new oral proceedings "as a matter of precaution", however the Examining division now refuses the application without granting a second oral proceeding.The board of appeal sides with the applicant and finds that his right to be heard was violated. The case is remitted and a second oral proceeding is to be held. It appears however, that the second oral proceedings may be limited to the issue of admissibility.

The board provided the following catchwords:

The procedural issue of admission under Rule 137(3) EPC of amendments filed in response to a communication under Rule 71(3) EPC constitutes a "subject of the proceedings" within the meaning of Article 116(1), second sentence, EPC which is distinct from the discussion of matters of substantive law that has previously taken place at oral proceedings.

1. The
present application was filed on 4 January 2008 as a divisional
application to application No. 04811128.0. It was refused with decision
posted on 23 March 2012.

Therefore, Rule 71 EPC in the version in
force as of 13 December 2007 (Article 4(2) of the decision of the
Administrative Council of 26 October 2010 amending the Implementing
Regulations to the European Patent Convention and the Rules relating to
Fees [CA/D 2/10], OJ EPO 2010, 637) and Rule 137(3) EPC in the version
in force as of 13 December 2007 (Article 2(2) of the decision of the
Administrative Council of 25 March 2009 amending the Implementing
Regulations to the European Patent Convention [CA/D 3/09], OJ EPO 2009,
299) apply.

Second oral proceedings

2. In the present case,
oral proceedings were held before the examining division on 7 April
2011. At the oral proceedings, the main request filed on 4 March 2011
was found not to be allowable. However, the examining division informed
the applicant of its intention to grant a patent on the basis of the
auxiliary request filed at the oral proceedings. The communication to
that effect under Rule 71(3) EPC was posted on 23 May 2011.

3.
With letter of 30 September 2011, the applicant filed amended claims. In
a communication of 24 October 2011, the examining division informed the
appellant that it did not consent to the amendments (point 4 of the
communication). In its reply dated 20 February 2012, the appellant
disagreed with the examining division on this issue (points 1 and 2 of
the letter) and requested oral proceedings "as a matter of precaution".
The request for oral proceedings did not specify what the applicant
wished to discuss at the oral proceedings. However, the request is to be
interpreted in the light of the requester's objectively discernible
will and taking account of the particular circumstances of the case.
Since the applicant was taking issue with the examining division's
exercise of its discretion under Rule 137(3) EPC, this procedural issue
was encompassed by the request for oral proceedings.

4. Without
holding further oral proceedings, the examining division refused the
patent application. In its decision, the examining division stated that
second oral proceedings had been refused pursuant to Article 116(1),
second sentence, EPC, because they would have dealt with issues that had
already been the subject of the oral proceedings of 7 April 2011,
namely examination of claim 1 with respect to the requirements of
Article 56 EPC. No substantially new situation had arisen to justify
second oral proceedings.

5. According to Article 116(1), second
sentence, EPC, the European Patent Office may reject a request for
further oral proceedings before the same department where the parties
and the subject of the proceedings are the same (German: "wenn die
Parteien und der dem Verfahren zugrunde liegende Sachverhalt unverändert
geblieben sind"; French: "pour autant que les parties ainsi que les
faits de la cause soient les mêmes").

The point of law to be
decided in the present case is whether the examining division had the
power pursuant to Article 116(1), second sentence, EPC to refuse further
oral proceedings. The answer hinges on the question of whether the
procedural issue of admission under Rule 137(3) EPC of amendments filed
in response to a communication under Rule 71(3) EPC constitutes a
"subject of the proceedings" within the meaning of Article 116(1),
second sentence, EPC which is distinct from the discussion of matters of
substantive law that has previously taken place at oral proceedings.

The
board sought guidance on this point of law in the preparatory work to
the EPC (point 6 below) and the jurisprudence of the boards of appeal
(point 7 below).

6. Since Article 116 EPC was not revised in 2000,
the preparatory work on the EPC 1973 is still pertinent as a
supplementary source for the interpretation of said Article.

6.1
The aim of what ultimately became Article 116(1), second sentence, EPC
1973 is set out in the minutes of the Main Committee (M/PR/I, p. 55,
points 523 to 528). It was considered that the draft under consideration
did not provide assurance against abuse of the right to request oral
proceedings. It was thus proposed to clarify that the European Patent
Office was not required to grant an application for more than one set of
oral proceedings on the same question and could refuse to hold further
proceedings (M/PR/I, p. 55, point 523). The Main Committee adopted the
proposal and referred some comments on drafting to the Drafting
Committee (M/PR/I, p. 55, points 524 to 526). The Drafting Committee
submitted a text allowing the European Patent Office to refuse a request
for further oral proceedings before the same body if the basic facts on
which the proceedings were based remained unchanged (M/PR/I, p. 55,
point 527). Upon a further proposal, it was clarified that the right to
refuse applied only if the parties concerned also remained unchanged
(M/PR/I, p. 55, point 528).

6.2 It emerges from the initial
proposal, which used the term "same issues", and the comments on
drafting in the Main Committee (namely the comment by FICPI, M/PR/I, p.
55, point 525) that the EPO should not be entitled to refuse further
oral proceedings if the issue (e.g. inventive step) remained the same
but the underlying basic facts did not. The diplomatic conference did
however not adopt a formulation which made a refusal of further oral
proceedings dependent upon the "basic facts" remaining unchanged (as
reported in M/PR/I, p. 55, point 527), but used the words "subject of
the proceedings" which can be understood as combining the factual basis
and the legal issues discussed at the first oral proceedings. In
contrast, the German and French texts refer to the facts underlying the
proceedings. There is however no statement in the preparatory work which
would allow it to be inferred from this divergence that the legislator
intended to empower the EPO to refuse further oral proceedings if, based
on the same facts, further legal issues were raised. But nor is any
legislative intent apparent that the prevention of "abuse of the right
to request oral proceedings" should encompass more than just avoiding
repetition of oral proceedings on identical matter.

7. The board has taken the following jurisprudence of the boards of appeal into consideration:

7.1
In T 529/94 of 9 October 1997, the applicant submitted amended sets of
claims each comprising two additional dependent claims, namely claims 3
and 4, which were received by the EPO shortly after the dispatch of the
communication under Rule 51(4) EPC 1973 and after oral proceedings. The
applicant also requested that a second oral proceedings be scheduled in
the event that the amendments were not accepted by the examining
division. In two communications, the examining division raised
objections under Article 123(2) EPC 1973. Furthermore, making use of its
discretionary power under Rule 86(3) EPC 1973, it refused consent to
the amendments requested. Further, the examining division held that the
subject-matter of the dependent claims had already been properly
discussed during the first oral proceedings, and there was therefore no
reason for a second hearing. On appeal, the applicant argued inter alia
that the examining division had committed a substantial procedural
violation in refusing further oral proceedings to discuss the
allowability under Article 123(2) EPC 1973 of claims 3 and 4.

The relevant finding of the board reads as follows (point 3.1 of the Reasons):

"In
the board's opinion, the examining division, in exercising the
discretional power under Rule 86(3), has considered newly filed claims 3
and 4 as inadmissible (letter of 29 October 1993 and decision). The
legal consequence of this measure was that claims 3 and 4 were never
integrated into the text of the application and never became part of it.

For
this reason denying a second oral proceedings intended to discuss the
allowability of proposed amendments already judged as inadmissible
cannot constitute a procedural violation."

From the latter
statement that "second oral proceedings [were] intended to discuss the
allowability of proposed amendments" it is however apparent that the
board in T 529/94 understood the applicant's request for second oral
proceedings to be limited to matters of substantive law, that is the
allowability under Article 123(2) EPC 1973 of claims 3 and 4. This is
corroborated by the summary of the appellants arguments (see point III
of the decision). The applicant thus did not intend to discuss the
procedural issue of the admission of the amendments at the second oral
proceedings it had requested. Further support for this interpretation is
the board's finding that the examining division had properly exercised
its discretion under Rule 86(3) EPC 1973 (point 4 of the Reasons) and
that, as a consequence, the amendments were not within the proceedings.
The need for second oral proceedings was thus considered against the
background that admission of the amendments into the proceedings had
already been discussed and decided. The ratio decidendi of decision T
529/94 cannot therefore be applied to the present case, where the
request for oral proceedings is not confined to matters of substantive
law but encompasses the procedural question of admission of the
amendments pursuant to Rule 137(3) EPC.

7.2 In decision T 1837/07
of 3 May 2011 the board held that the examining division should have
admitted the second auxiliary request into the proceedings, which would
have changed the subject of any further oral proceedings. Relying on a
procedural situation where the request filed in response to a
communication under Rule 71(3) EPC had to be regarded as being within
the proceedings, the board found that oral proceedings should have been
held as requested by the applicant. Because the board in T 1837/07
disagreed with the examining division's exercise of its discretion over
the admission of amended requests before considering the need for
further oral proceedings on matters of substantive law, the decision
does not give guidance on the issue to be considered in the present
case.

7.3 Decisions T 731/93 of 1 December 1994 and T 194/96 of 10
October 1996 also differ from the present case. Both decisions deal
with the interpretation of Article 116(1), second sentence, EPC 1973,
but concern cases in which the factual circumstances underlying the
proceedings had changed in the meantime. According to T 731/93, if fresh
evidence has been admitted into the proceedings, the "subject" of such
proceedings in the meaning of Article 116(1), second sentence, EPC 1973
can no longer be the same. In that case the fresh evidence amounted to
experimental evidence (see point 5 of the Reasons). In T 194/96, new
citations were submitted, at least one of which was regarded as more
pertinent than the documents on file. This document changed the nature
of the decision. Therefore, the subject of the proceedings within the
meaning of Article 116(1), second sentence, EPC 1973 was considered to
no longer be the same (point 3 of the Reasons).

7.4 Several
decisions have also dealt with the issue of second oral proceedings at
the appeal stage. In T 614/90 of 25 February 1994, oral proceedings took
place before the board, but the appeal proceedings were continued
thereafter in writing. The patent proprietor (respondent) filed a second
auxiliary request (in addition to a main request and a first auxiliary
request filed during oral proceedings) and requested further oral
proceedings or, alternatively, to be given a further opportunity to
comment in writing on the board's reasons for refusing to hold further
proceedings. The board did not consider further oral proceedings to be
expedient. It argued that "the main and the first auxiliary requests
were the subject of the proceedings before the Board on 27 October 1993;
as to the second auxiliary request, ... it is not clearly allowable
and, therefore, not admitted into consideration" (point 3 of the
Reasons). The board also refused the request for an opportunity to
comment in writing. It seems that the board understood the request for
further oral proceedings to be related to a discussion of substantive
matters and not to the procedural issue of admission of the second
auxiliary request.

7.5 In case T 692/90 of 28 September 1993, the
board interpreted the term "subject" in Article 116(1), second sentence,
EPC 1973 with reference to the German text as referring to facts, but
not to the legal assessment of facts (point 6 of the Reasons). The board
refused to hold further oral proceedings on appeal, since the purpose
of continuing the proceedings in writing after first oral proceedings
was to provide further clarifications with regard to the same facts as
discussed during oral proceedings. Similar conclusions were reached by
the boards in cases T 547/88 of 19 November 1993 (point 2 of the
Reasons) and T 298/97 of 28 May 2001 (point 13 of the Reasons).

8.
Neither the preparatory work to the EPC 1973 (point 6 above) nor the
jurisprudence of the boards of appeal discussed above (point 7) gives
clear guidance as to whether the procedural issue of admission of
late-filed amendments under Rule 137(3) EPC constitutes a "subject of
the proceedings" within the meaning of Article 116(1), second sentence,
EPC which is distinct from the discussion of matters of substantive law
that has previously taken place at oral proceedings. In the board's
judgement, this question is to be answered in the affirmative, for the
following reasons:

8.1 The board agrees with decision T 556/95 (OJ
EPO 1997, 205) that oral proceedings can be requested for discussion of
substantive or procedural matters and that oral proceedings have to be
appointed, on request, to discuss amendments submitted after the issue
of a communication under Rule 51(6) EPC 1973 (second headnote and point
4.4 of the Reasons). The board is aware that the facts underlying
decision T 556/95 differ from the present case in that no oral
proceedings were held prior to the examining division's decision not to
admit the amendments. The ratio decidendi of decision T 556/95 is thus
confined to the finding that Article 116(1), first sentence, EPC 1973
imposes an absolute obligation on the EPO to hold oral proceedings once
these have been requested by a party to the proceedings. The principle,
set forth in point 4.4 of the Reasons and in the second headnote, that
oral proceedings can be requested and have to be appointed for
discussion of any remaining procedural request, nevertheless holds good
in the context of Article 116(1), second sentence, EPC, when considering
whether or not the "subject of the proceedings" has remained the same.
The term "subject of the proceedings" used in Article 116(1), second
sentence, EPC, cannot be interpreted without having regard to what can
be the subject of oral proceedings according to Article 116(1), first
sentence, EPC. In the board's judgement, it follows from T 556/95 that
the admission under Rule 137(3) EPC of amendments filed in response to a
communication to Rule 71(3) EPC is a subject of examination proceedings
distinct from any prior discussion on patentability. Therefore, if
amendments are filed subsequent to first oral proceedings and further
oral proceedings are requested for discussion of the procedural issue of
admission of the amendments into the proceedings under Rule 137(3) EPC,
the procedural issue of admission has to be considered as a change in
the subject of the proceedings within the meaning of Article 116(1),
second sentence, EPC, requiring the appointment of second oral
proceedings.

8.2 This finding is also in line with decisions on
the requirement of substantiation of appeals in cases where an
application was refused on the ground that there was no agreed set of
claims after the examining division had refused consent under Rule
137(3) EPC (Rule 86(3) EPC 1973) to amendments filed in response to a
communication according to Rule 71(3) EPC (Rule 51(4) EPC 1973). In such
cases, the factual and legal framework of an appeal is confined to the
procedural issue of whether the examining division lawfully exercised
its discretion under Article 137(3) EPC (unless the absence of an agreed
set of claims is disputed). Therefore, the applicant has to give
reasons in his statement of grounds of appeal why it considers the
examining division's exercise of its discretion under Rule 137(3) EPC
not to admit the applicant's request to be incorrect (T 573/09 of 26
September 2012, points 2.1, 2.4 and 2.5 of the Reasons; T 1707/07 of 10
May 2011, points 5 and 7 to 9 of the Reasons; T 2193/09 of 13 July 2010,
points 1.4 and 1.5.2 of the Reasons; T 1064/04 of 27 June 2008, point 2
of the Reasons; and T 78/98 of 30 October 2001, point 1 of the
Reasons). A finding that the examining division did not correctly
exercise its discretionary power is a prerequisite for any review of
substantive matters (see e.g. decision T 573/12 of 8 May 2013 holding
that the examining division did not properly exercise its discretionary
power). Admission of amendments under Rule 137(3) EPC is therefore
distinct from any matters of substantive law discussed before the
department of first instance.

8.3 Indeed, if the applicant, in
reply to a communication under Rule 71(3) EPC, files amendments
replacing the requests discussed during oral proceedings, the factual
and legal framework of the proceedings changes: the text which has
formed the basis of examination is no longer agreed to, as required by
Article 113(2) EPC, and cannot, therefore, serve as a basis for the
grant of a patent. The amendments, on the other hand, do not become part
of the proceedings with their filing but must be admitted into the
proceedings by the examining division. Resumption of substantive
examination thus depends on the amendments being admitted into the
proceedings. This procedural question has thus to be decided before any
discussion as to substance can ensue. Again, these considerations lead
the board to affirm that the procedural issue of admission under Rule
137(3) EPC of amendments filed in response to a communication under Rule
71(3) EPC constitutes a "subject of the proceedings" within the meaning
of Article 116(1), second sentence, EPC which is distinct from the
discussion of matters of substantive law that has previously taken place
at oral proceedings.

9. The board has also considered the
possibility that the above interpretation of Article 116(1), second
sentence, EPC may give rise to complications and delays in examining
proceedings, to the detriment of legal certainty and procedural
efficiency. However, Article 116(1), second sentence, EPC is one of two
exceptions to the right to oral proceedings which is, according to the
established jurisprudence, an absolute right. Whereas Article 116(2) EPC
confers broad (although not unlimited) discretionary powers on the
Receiving Section with respect to the appointment of oral proceedings,
the conditions specified in Article 116(1), second sentence, EPC in
which the EPO has discretion to reject a request for oral proceedings,
are limited. Since considerations of expediency and procedural economy
cannot take precedence over the right to oral proceedings enshrined in
Article 116(1), first sentence, EPC, such considerations cannot, in the
absence of a clear intention to the contrary on the part of the
legislator, warrant a broad interpretation of the exception in Article
116(1), second sentence, EPC which would limit the right to oral
proceedings.

10. For the above reasons, the examining division had
no power, in the circumstances of the case, to refuse the appellant's
request for second oral proceedings. The examining division was thus
wrong in law to issue its written decision without having appointed oral
proceedings as requested by the appellant. This failure constitutes a
fundamental deficiency in the first-instance proceedings which justifies
remittal (Article 111(1), second sentence, EPC and Article 11 RPBA).

Reimbursement of the appeal fee

11.
According to Rule 103(1)(a) EPC, reimbursement of the appeal fees is to
be ordered in the event of interlocutory revision or where the board of
appeal deems an appeal allowable, if such reimbursement is equitable by
reason of a substantial procedural violation.

12. In the present
case, the appellant had a right to be heard orally on the issues to be
taken into account by the examining division in the exercise of its
discretion under Rule 137(3) EPC. At the oral proceedings, the appellant
could have presented further arguments attempting to refute the
examining division's arguments. It cannot be excluded that the
opportunity to comment at oral proceedings could have influenced the
examining division's decision under Rule 137(3) EPC. The failure of the
examining division to hold second oral proceedings which had been
clearly requested by the appellant thus constitutes, in the
circumstances of the case, a substantial procedural violation that
justifies reimbursement of the appeal fee.

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.
3. Reimbursement of the appeal fee is ordered.